Ex Parte Sans et al

Board of Patent Appeals and Interferences

Apr 26, 2010

09794201 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHARLES SANS, JEAN-YVES BOUCHE, and ALLEN VAN
SICKEL
____________________

Appeal 2008-005052
Application 09/794,2011
Technology Center 2100
____________________

Decided: April 27, 2010
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Before JOSEPH L. DIXON, JEAN R. HOMERE, and
JAY P. LUCAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on February 26, 2001. The real party in interest is Xerox
Corporation.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 (a) from the Examiner’s
final rejection of claims 1 through 17. We have jurisdiction under 35 U.S.C.
§ 6 (b).
We affirm.
Appellants’ Invention
Appellants invented an electronic document management system
(EDMS) for managing the components and activities associated with a
version of an electronic document. (Spec. 2, ll. 26-28.) As shown in
Appellants’ Figure 1, the EDMS (100) includes a memory (30) that stores a
plurality of projects (51-52) having various components (e.g. pre-processed
variable data and pre-processed reusable objects) that are optimally
formatted before being forwarded to an output device (20) to complete a
print job. (Spec. 2, ll. 1-6, spec. 5, ll. 7-18.)
Illustrative Claim
Claim 1 further illustrates the invention. It reads as follows:
1. An electronic document management system for managing all
components and activities associated with generating an output version of an
electronic document from any of a plurality of different output devices,
comprising:
a memory storing:
a project comprising at least one job associated with the electronic
document, wherein the electronic document comprises variable data and a
plurality of reusable objects, a project file associated with the job, and a
copy of all components needed for the job, including a submission
file, the electronic document, pre-processed variable data and pre-processed
reusable objects in optimized formats for use by at least one of the plurality
of different output devices, and an editable version of the electronic
document for enabling modifications of the electronic document to be made
prior to generation of an output data stream and to incorporate desired
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changes, a plurality of the components having a local scope, wherein a
component having a local scope may be used by any job in the project;
wherein a job comprises a list of activities associated with generation
of a data stream for use by an output device from the electronic document
for outputting an output version of the electronic document;
wherein the project file comprises a list of all components, including
the electronic document, associated with the job, for each such component,
the component's attribute information and location information, and
modification information about the project; and
a processor, responsive to the job and to the project file, for
performing any activities on any of the components associated with the job,
for storing a record of any modifications made to any of the job components
and for enabling generation of the data stream.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:

Smith 5,181,162 Jan. 19, 1993
Hajmiragha 6,289,460 B1 Sept. 11, 2001
(filed Dec. 6, 1999)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1 through 3 and 5 through 17 stand rejected as being
anticipated by Smith.
2. Claim 4 stands rejected as being unpatentable over the
combination of Smith and Hajmiragha.

Appellants’ Contentions
Appellants contend that Smith does not teach a memory that stores a
project including an electronic document, preprocessed variable data and
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preprocessed reusable objects in optimized format for use by an output
device, as recited in independent claim 1. (App. Br. 11.) According to
Appellants, Smith discloses storing different versions of a document, each
version comprising components and objects of the original document.
Appellants submit, however, that none of the objects or components
disclosed in Smith contains preprocessed variable data or reusable objects in
an optimized format for an output device to use, as claim 1 requires.
Examiner’s Findings
The Examiner finds that Smith’s disclosure of a database management
system (DBMS) containing a pointer to memory address of content data (e.g.
text, image, voice, graphics) for a document teaches the broad recitation of
preprocessed variable data and objects, as broadly claimed. In particular, the
Examiner finds that Smith expressly teaches that the disclosed objects can
relate to one another and can be reused to facilitate efficient memory
utilization. (Ans. 8.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that Smith
teaches a memory that stores a project associated with an electronic
document having preprocessed variable data and preprocessed reusable
objects in optimized format for use by an output device, as recited in
independent claim 1?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
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Smith
1. As shown in Figure 1, Smith discloses a document management
and production system for representing documents as a collection of logical
components or objects that are organized and accessed through a DBMS.
Each object contains text, image, voice or graphics, as well as data
specifying their relationship to one another. (Abstract.)
2. Smith discloses that the objects may be hierarchically related to
one another in order to share their content and attributes. This permits the
objects to be reused to thereby result in efficient memory utilization. (Col.
3, ll. 14-18.)
3. Smith discloses that content object may be stored within the
DBMS, which contains a pointer to the memory address of the content.
(Col. 4, ll. 23-29.)
4. Smith discloses a document manager (16) that, upon receiving
the objects, uses their contents and attributes to generate final layout
parameters thereby producing a properly formatted version of a paginated
memorandum, which is sent to an output device. (Col. 7, ll. 23-36.)

IV. PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
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Anticipation of a patent claim requires a finding that the claim
at issue “reads on” a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted.)

V. ANALYSIS
Independent claim 1 requires in relevant part a memory that stores a
project associated with an electronic document having preprocessed variable
data and preprocessed reusable objects in optimized format for use by an
output device.
As set forth in the Findings of Fact section, Smith discloses a DBMS
containing a pointer for identifying the address each content and attribute
associated with a related object to thereby allow the objects to share and
reuse components in order to achieve efficient memory utilization. (FF. 1-
3.) Smith further discloses a content manager that utilizes the stored content
and attributes of the objects to properly format a document before sending it
to an output device. (FF. 4.) We agree with the Examiner that by allowing
the objects to share and reuse certain object attributes and contents, Smith
teaches that such selected object components are pre-processed and capable
of being reused between the objects in order to achieve optimal utilization of
the memory where the objects reside. Further, we find that by allowing the
content manager to properly format the objects before they are printed,
Smith teaches that the content manager manipulates the content and
attributes of the reusable objects to further optimize their format before
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forwarding them to the output device. We, therefore, agree with the
Examiner that Smith’s document management system as depicted in Figure
1 teaches the disputed limitations, as recited in claim 1.

As to claims 1 through 3, 5 through 17, Appellants repeat the same
arguments offered for the patentability of claim 1. (App. Br. 12-13.) We
already addressed these arguments in our discussion of claim 1 above, and
we found them unpersuasive. 37 C.F.R. § 41.37 (c) (1) (vii)
It follows that Appellants have not shown that the Examiner erred in
finding that Smith anticipates claim 1 through 3 and 5 through 17.

Regarding dependent claim 4, Appellants argue that Hajmiragha does
not cure the deficiencies of Smith as argued for claim 1. (App. Br. 13.) As
discussed above, we find no such deficiencies in Smith for Hajmiragha to
remedy. Consequently, Appellants have failed to show error in the
Examiner’s conclusion that the combination of Smith and Hajmiragha
renders claim 4 unpatentable.
VI. CONCLUSIONS OF LAW
1. Appellants have not established that the Examiner erred in
rejecting claims 1 through 3 and 5 through 17 as being anticipated under
35 U.S.C. § 102(b).
2. Appellants have not established that the Examiner erred in
rejecting claim 4 as being unpatentable under 35 U.S.C. § 103(a).

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VII. DECISION
We affirm the Examiner's rejection of claims 1 through 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a) (1) (iv).

AFFIRMED

Erc

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